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Saturday, June 30, 2012

In a decision delivered on June 12, 2012, the Mumbai Bench of the IPAB has
revoked Hindustan Unilever’s (HUL) patent 195937 titled “Filter Device” in a
revocation petition filed by Tata Chemicals. The IPAb further imposed costs of INR 5000 on HUL. We will carry a detailed analysis shortly. Last December, I had blogged
on a related suit before the High Court of Delhi, although I am not
sure if the patent in the suit is the same as the one revoked by the IPAB.

The IPAB has revoked HUL’s patent
on grounds of lack of novelty, obviousness and suppression of information under
Section 8 of the Patents Act. If news
reports are to be believed, HUL may prefer an “appeal” before the Bombay
High Court. In two
earlier posts,
I had expressed by views on why there can be no “appeals” to a High Court from
a decision of the IPAB. Therefore, I am not sure if HUL can prefer an “appeal”;
it can at best file a writ petition.

Wednesday, June 27, 2012

The following is an excerpt from
a decision of the IPAB dated July 26, 2011:

“25.The IPAB has its permanent
sitting at Chennai and holds its sittings in Circuit at Delhi, Mumbai, Kolkata and Ahmedabad. The power vested in the
High Courts to exercise judicial superintendence over the decisions of all
courts and tribunals when their respective jurisdiction has been upheld. The
orders of the IPAB are subject to the High Court’s power of judicial review.
The High Court which exercises this judicial superintendence is that High court
within whose territorial jurisdiction the IPAB sits while issuing its order.
Therefore, if an order is passed by the IPAB while sitting in Delhi, the
aggrieved party applies to the Hon’ble Delhi High Court to correct the order
and so on.But
as regards the question which High Court’s decision binds us, the answer must
be that we are bound by the judgements of all the High Courts. Unlike Tribunals
which have separate Benches for each zone and therefore bound by the
jurisdictional High Court, Intellectual Property Appellate Board exercises its
jurisdiction all over India but only sits in Circuit. Therefore, to follow the
jurisdictional High Court rule would lead to an anomaly. For example, ‘A’
filing a suit against ‘B’ for infringement of its trade mark will, in respect
of the same trade mark, be forced to get leave, of the court before whom the
suit for infringement is filed, to file rectification proceedings if the suit
is filed in the Hon’ble Delhi Court or anywhere within the jurisdiction of the
Hon’ble Delhi Court and it need not seek leave of the court if the suit is
filed in the Hon’ble Madras High Court or anywhere within the jurisdiction of
the Hon’ble Madras High Court. This is an anomalous situation and will not be
logical.

26.Then again the same persons who comprise the Bench will speak
in “different voices” depending on whether they are sitting inDelhi or in Chennai. This leads to confusion and
uncertainty, and if anything law has to be certain.”

The decision and the above-excerpt were brought to my
attention by a well-wisher of the blog. The first portion of the excerpt (in
bold and italics) captures well the nature of jurisdiction exercised by the
IPAB, which is a mix of “subject-matter” and territory-based jurisdictions.
Being a body which has been expressly and exclusively constituted as an appellate
body over the decisions of the Patent and Trademark registries, the scope of
the subject-matter which triggers the jurisdiction of the IPAB is crystal
clear.

What is also clear is that although
the IPAB has its permanent seat in Chennai, its various circuit benches sit in
appeal over the decisions of the corresponding patent and trademark registries.
In other words, a decision of the Delhi branch of the Indian Patent Office may
be scrutinized in appeal only by the Delhi Bench of the IPAB. To this extent,
the excerpt makes sense.

However, the subsequent
underscored portion appears to be an argument of convenience which directly
contravenes the pronouncement of the Supreme Court in E.I.Commercial Co. v. Collector of Customs (A. 1962 S.C.1895). In
this case, the Supreme Court had held that the law declared by a High Court
would be binding on all inferior courts as well as tribunals within
the State.

The law on this point as laid
down by the Supreme Court does not change merely because the same set of people
(members of the IPAB) are subject to different High Courts depending on where
the sitting is held. This is because the IPAB, when holding a sitting within
the jurisdiction of a particular High Court, has no option but to follow the
law as laid down by that High Court.

Further, the members of the IPAB
are merely human agents who speak on behalf of the Tribunal, they are not the
Tribunal themselves. The Tribunal is a body corporate with a permanent seal,
which is bound by the doctrine of stare
decisis which binds all sub-ordinate courts and tribunals to the High Court. Therefore, when members
of the IPAB speak, they do not voice their personal views, they voice the views
of a particular circuit bench of the IPAB which is bound by the law as spelt
out by the High Court of that State.

If this were not the case, the situation would be that all lower Courts would follow the law laid down by the
High Court, except the IPAB circuit bench. This is not just an anomaly, but is
actually contempt and unconstitutional.

Since High Courts themselves are at liberty to differ with
each other on the interpretation of a provision which is equally applicable to all
States (for instance in central legislations), the premise underlying the IPAB’s
reasoning lacks legal sanction and factual basis. Merely because IP laws are
uniformly applicable throughout the country, it does not take away the
prerogative of different High Courts to take differing, even contradictory
views on the law. The tribunals/benches of tribunals which fall within the territory of High Courts, have no option but to
apply the law as interpreted by their respective High Courts.

Tuesday, June 26, 2012

The Copyright Amendment Bill, that saw its way ahead to be included as a part of the existent Copyright legislation, causes me more worry than lending comfort.
What is most astounding is that there are several who believe that Bollywood has in fact been victorious by having the Bill passed at both the Houses of Parliament.

In my eyes, it is their own doom’s day! Javed Akhtar’s ecstatic speech is available here. On one hand, the apparent motive for bringing the amendment, with respect to royalty sharing is claimed to be the number of erstwhile music directors, lyricists etc. who did not get their due share, and whose families now remain in poor financial state.

However, I wonder how the Parliament plans to enforce the provision “retrospectively”, considering that Bollywood celebrates its centenary this year. To my eyes, this is a case of crying “Wolf! Wolf!”. While several legendary names are being propagated as the reason for the need for such a royalty-sharing provision, it appears that the real beneficiaries may only be today’s interested parties.
The Copyright Act has a provision governing “work done in the course of employment “ and “work for hire”.

The manner in which work is undertaken in the film industry, being “work for hire” is clearly contractual in nature. In this view, any and all terms including royalty are negotiable- a situation similar to that existent amongst authors and publishers. In this light, I fail to see the basic need to move for such an amendment- clearly it is only with the motive of securing the position of certain “interested parties”, who do not (atleast on the face of it) settle for a financially lopsided deal.

This having been said, I wonder why the Parliament, in spite of having some eminent lawyers on board, chose to ignore this. I wonder now, if inventors, (perhaps through some one as well- liked as Dr. Kalam) have their demand for royalty-sharing voiced. After all it is just fair, that everyone gets a due piece of the pie...

Sunday, June 24, 2012

Social Networks are beyond posts, likes, notes, tags, albums and akin. As evident, they’ve become an excellent platform for those who wish to promote their brands, work, et al. This having been said, it is necessary to look at some more implications- What happens when a user at such a website posts content such as videos that in fact are someone else’s work of authorship?

I have been thinking of the implications of my own postings for some time now- While I remember old songs and think I must remind these long lost ones to friends who share the mutual love, I wonder about the unauthorized display and distribution at my end.

A question that almost instantly comes to mind is whether making a video available on a platform like YouTube lead to an implied consent to share it further down the line? The answer may be a yes and a no. Yes, because so long as sharing the work merely promotes and aids the commercial interests of the author, he may not really have reasons to complain. No, because the author in fact may desire for his work to remain only on one medium, for any reason whatsoever.

I wonder what the balancing metaphor is. Like the four-factor test, is it usurpation of commercial benefit, or, the violation of moral rights? Is the possibility or option to take down a determinate to the possible violation of one’s rights? It would be lovely to hear from other social networking enthusiasts on what their views are!

Sunday, June 10, 2012

Last week, I had written a post
on appeals
from the decision of the IPAB. I had taken the view that apart from
invoking the writ powers of the High Court under Article 226/227, there is no
provision for an appeal from a decision of the IPAB.

The significance of an appeal is that it is a matter of right i.e. unlike a
Special leave Petition before the Supreme Court or a Writ Petition before High
Courts, an appeal gives an aggrieved party the right to knock an appellate
forum for re-appreciation of the merits of the case.

I had asked a student of NLU
Jodhpur, Ms.Savni Dutt, to review other niche legislations, specifically
Telecom Regulatory Authority Act, 1997 and the Competition Act, 2002. Savni
looked in to the Income Tax Act of her own accord. Savni confirmed what I had
in mind.

Akin to Section 117F of the
Patents Act, under Section 14N of the TRAI Act, all appeals which were pending
before High Courts were transferred to the Telecom
Dispute Settlement Appellate Tribunal (TDSAT). Further, Section 18 of the TRAI
Act provides for an appeal to the Supreme Court from the decision of TDSAT.
There is no provision of appeal to the High Court (although the Writ Power of
High Courts remains, which goes without saying).

Similarly,
under Section 53T of the Competition Act, an appeal lies to the Supreme Court
from the decision of the Competition Appellate Tribunal (CAT). However, again
there is no provision of appeal to the High Court.

Again,
under the Income Tax Act, an individual aggrieved by the order of the Income
Tax Appellate Tribunal may appeal under Section 260A of the Act only if it
raises a substantial question of law. Here too, this power has been expressly
vested in the High Court by the IT Act.

Similar
provisions exist under Section 130 of the Customs Act, 1962, Section 35 of the
FEMA Act and Section 18B of the SARFAESI Act.

It
is to be noted that there are no such provisions of appeal either to the High
Court or to the Supreme Court under the Patents Act from a decision of the
IPAB. An appeal is a statutory right and since there exists none from the
decision of the IPAB, it cannot be assumed to exist.

Also,
a High Court typically is an appellate forum; very few High Courts have been
vested with original civil jurisdiction since exercise of original civil
jurisdiction is not the norm for High Courts; it is an exception that has been expressly provided for. Therefore, it may not be right to assume that the IPAB
has stepped into the shoes of a Single Judge of the High Court, and therefore,
an appeal lies from the IPAB to the Division Bench of the High Court.

Simply
put, the IPAB has replaced the High Court itself as an appellate forum, and not
just Single Judges of the High Court. Consequently, an appeal may not lie from
the IPAB to the Division Bench for two reasons:

1.
An appeal provision is not provided for in the Patents Act; and

2.
the IPAB has replaced the High Court as the forum with original and final
jurisdiction over appeals from decisions of the Controller of the Patent
Office.

To
summarize, I do not think appeals lie either to a Single Judge of a High Court
or to the Division Bench from a decision of the IPAB. The only way to knock the
doors of the High Court is to file a writ under Articles 226/227.

Darjeeling Tea seems to be in the midst of a dispute, over its GI registration and related trade mark rights. The Tea Board of India, which holds rights to the GI (a device as shown here) and a Certification mark, moved against ITC Limited for naming a ‘section’ of its hotel ITC Sonar as “Darjeeling Lounge”.

The Tea Board of India, has asserted exclusivity over "Darjeeling", and has moved an action for infringement and passing of both the Registered GI and certification mark, as well as dilution of the "Darjeeling" brand.

Defending the Interlocutory Petition, ITC asserted that the rights under the Trade Marks Act and GI Act were meant to be restrain “use” only on goods and not services. They specifically asserted that the GI Act sought to protect indications with respect to goods only, on account of the quality, reputation or other characteristics attributable to their geographical origin.

In giving due weight to the arguments, the Court examined the provisions of the GI Act as well as the Trade Marks Act. The Court, recognizing a cause of action in an unauthorized use of a good's certification mark by any service provider, felt that in view of the GI Act, infringement as under Section 22(1) of the GI Act was not available to Tea Board, since the use by ITC was not in connection with any designation or presentation of good.

The Court, further ruled that against Tea Board on the passing off action, stating that by virtue of its registration as a GI or as a certification mark, they could not claim exclusive rights to “Darjeeling”.
The Tea Board of India moved in appeal to this order.

The Division Bench addressed the question of the scope of the Tea Board’s rights in view of its existing registrations. The Bench in view of Sections 28 and 29 (dealing in Rights conferred by registration and Infringement of registered Trademarks) and Sections 75 and 78 ( corresponding to rights in Certification trademarks).

The Court particularly deliberated upon the infringement by use of a registered trademark by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered [sec 29 (5)] and observed that a corresponding provision is absent under Section 75.

The Court opined that extrapolating the provisions in Section 29 to rights conferred under Section 75, is hence disallowed.
With respect to the passing off action, the Court held that a prima facie case was not made out, since the Tea Board I of India neither traded in tea nor is in the service of rendering hospitality. The Court found that ITC in using the word DARJEELING did not falsely assert that it had the right to certify that the tea served in the lounge grows in Darjeeling.

Further, the Court concluded that Tea Board's prima facie failure in proving violation of its registered certification trademark in terms of sec 75 of the TM Act, as it had not registered its name as holder of the mark DARJEELING in respect of hotel business but for the purpose of certification of tea as one grown in Darjeeling where benefit of Sections 28 and 29 of the TM Act is not available.

The suit filed by Tea Board is pending before the High Court of Calcutta and the Intellectual Property Appellate Board (IPAB) is also set to hear this dispute, in respect of a challenge in opposition proceedings. Tea Board moved to IPAB challenging ITC’s application to register "Darjeeling Lounge" under class 42. This application had earlier been abandoned by the Registrar, since ITC had failed to file its counter-statement in time.

Saturday, June 9, 2012

In my
last post, I took the view that Section 107A(a) does not exempt any and all
research from infringement. The Section only permits use of a patented
invention for purposes which are reasonably related to development and
submission of information to regulatory authorities inside or outside India. Strictly
speaking, this is not a “research exemption”, it is a regulatory exemption.

That said, I am not of the
opinion that the Patents Act does not provide for research exemption. My only
contention is that Section 107A(a) is not the provision to be looked into for
that purpose.

I am sure most or all of our
readers know that the grant of a patent is subject to restrictions under
Section 47, one of which is under sub-section 3. Section 47(3) refers to use of
a patented invention for the “purpose of merely of experiment or research
including the imparting of instructions to pupils”. Following are
the questions that need to be addressed:

1. Why does the provision use “merely”
before experiment or research?

2. Why does it include, and hence
in a sense, equate imparting of instructions to pupils with “merely of
experiment or research”?

The spirit behind these questions
is to understand the scope and extent of “research exemption” available under
Section 47(3). Following are a few questions for our readers to ponder over and volunteer with inputs:

A. Is it possible to argue that
the use of “merely” before experiment or research is to give an “academic” hue
to the research?

B. Is it possible to argue that
the exemption extends only to the extent that any person may dismantle a
patented invention to understand it better?

C. Under Section 47(3), can a
patented invention be used as a research tool without the consent of a patentee
to build a better product or evolve a better process?

D. Under Section 47(3), can a
patented invention be put to a different use than was intended by the patentee,
without the consent of the patentee for the purposes of research?

I don’t have answers to these
questions, but I raise these for consideration by our readers. I shall go
through provisions and case laws in other jurisdictions to look for an interpretation which comes closest to justifying the phraseology of the Indian provision.

It is commonly assumed that use of a
patented invention for the purposes of research is exempt from infringement
under Section 107A(a) of the Patents Act, which is commonly referred to as the
Bolar exemption. (which has its genesis in the decision of the US Court of
Appeals for Federal Circuit in Roche
Products v. Bolar Pharmaceuticals)

Contrary to popular perception,
Section 107A(a) does not provide a blanket safe harbor for use of the patented
invention for “research”. As reflected by the wording of Section 107A(a), it
permits any act of making, constructing, using, selling or importing the
patented invention “solely for uses reasonably related to the development and submission
of information required under any law for the time being in force, in India, or
in a country other than India that regulates the manufacture, construction,
use, sale or import of any product”.

In light of such restricted wording, I
don’t see how is it possible to conclude that any use of a patented invention
for any research enjoys exemption from infringement under Section 107A(a). We are entitled to have any opinion on what the law ought to be, but what the law is must be
understood from the Act. In short, the opinion must be an "informed one".

“Can you please answer if i have priority date in India for my
parent invention which is published in patent gazette and i have few days left
for completion of 12 months duration from priority date for filing PCT
application. Now i wish to file patent of addition before Indian patent office
but i want to file single PCT application for both the said application. How
shall i proceed? Is it possible to file a club application claiming both the
priorities? if yes, how shall be the description and claims? (like the claims
of patent of addition should be in continuation of claims of parent invention”

I felt it would be best
to clarify the status of patents of addition in order to comprehensively answer
the question.

Patents of addition, in
my opinion, are also amendments effected to the complete specification. The
only difference being that they are “positive amendments” by way of additions
to the description and claims, as opposed to being disclaimers, deletions or
clarifications. This means what is sought to be filed as a patent of addition
too must have the same or cognate inventive step as the originally filed/granted patent
application/patent as the case may be.

As reflected by Section
54(1) of the Patents Act, a patent of addition may be filed during the pendency
of the parent patent application or after its grant, unlike a CIP in the US
which must be filed during the pendency of the non-provisional (complete)
specification.

Section 55 of the Act
makes it clear that the term of the patent of addition ends along with the
parent patent. This is an exception to Section 53 which states that the term of
a patent is 20 years from the date of filing of the application.

However, what is the
position of law with respect to the priority date of claims claimed in the
patent of addition? The common flaw is to assume that since the term of the
patent of addition ends along with the parent patent, it has the same priority
date as that of the parent patent. I do not think the approach behind this
assumption is valid.

For the purposes of
understanding priority, Section 11 must be looked into which states that each
claim of a complete specification shall have a priority date. I had written in
an earlier
post that priority dates are decided on the basis of “fair disclosure”.
Similarly, in a patent of addition, if the claim is fairly based on the matter disclosed
in the complete specification of the parent patent application, then it would
have the same priority date as that of the complete specification of the parent
patent.

However, if the claim is
fairly based on matter disclosed in the application for patent of addition, its
priority date shall be the filing date of the patent of addition.

If this be the case,
what are rules of establishing anticipation for a patent of addition? If a
document discloses material which is identical to the new embodiment claimed in the
patent of addition which has the filing date of the patent of addition as its priority date, and the document was published after the publication of the
parent patent but before the filing date of the patent of addition, then
such a document may be validly used as anticipatory prior art against the patent of addition.

It must be understood
that Section 56 of the Patents Act bars only the use of the complete specification
of the parent patent to allege lack of inventive step in the patent of addition,
however there is no bar on using the complete specification of the parent
patent or any other published document to establish lack of novelty in the
patent of addition.

That said, it must also be understood that sometimes the patentee or the applicant may have disclosed an embodiment in the written description of the parent patent, but may not have claimed it. In such situations, the written description of the parent patent may not be used to allege lack of novelty of the patent of addition which claims the embodiment because that would defeat the very purpose of filing the patent of addition.

Now, to address the
comment of the anonymous commentator, it is certainly possible to file a single
PCT application clubbing matter disclosed in the parent patent and patent of
addition provided the PCT application is filed within 12 months from the date
of priority of the parent patent. However, the PCT application must refer to both
the parent patent and patent of addition, and must therefore refer to two
priority dates if the claims in the patent of addition are based partly on the
parent patent and the patent of addition.

Friday, June 8, 2012

Section 30
of the Trademarks Act, 1999, deals with limits on effects of a registered
trademark, which explains the object of the provision. Sub-section 3 of Section
30 reads as follows:

“(3) Where the goods bearing a registered
trade mark are lawfully acquired by a person, the sale of the goods in the
market or otherwise dealing in those goods by that person or by a person
claiming under or through him is not
infringement of a trade by reason only of----

(a) the registered trade mark having been
assigned by the registered proprietor to some other person, after the
acquisition of those goods: or

(b) the goods having been put on the market
under the registered trade mark by the proprietor or with his consent.

(4) Sub-section (3) shall not apply where
there exist legitimate reasons for the proprietor to oppose further dealings in
the goods in particular, where the condition of the goods has been changed or
impaired after they have been put on the market.”

The
limited idea of this post is to understand the meaning of the phrase “is not
infringement of a trade by reason only of”. Obviously, for unconsented use of
the mark to be deprived of the benefit/exemption spelt out in the sub-section
and to be accused of infringement, the user of the mark (not being the owner or
his licensee) must do something beyond merely dealing with goods which have
been legitimately placed in the market by or with the consent of the owner.

Apart from the scenario mentioned in sub-section 4, what could
those situations be where the user of the mark goes beyond merely dealing in
such legitimate goods? One situation could be where such a party starts
representing himself as an “authorized dealer of the goods of the trademark
owner”.

Although
he may be rightfully dealing in goods which have been put in the stream of
commerce by or with the consent of the trademark owner i.e. “authorized goods”,
he may not represent himself as an “authorized dealer” under any circumstances.

Simply
put, a dealer of authorized/genuine goods is not an “authorized dealer”. The
false representation as an “authorized dealer” would amount to passing off in a
limited sense since the distributor would claim false association with the
trademark owner to enhance his visibility/profile. Even if he deals solely in
legitimate goods of the trademark owner thereby causing no “real” pecuniary
injury in the short term, his representation would be false, and would result in dilution of the
mark.

For now, I
can’t think of other situations which could be precluded from the exemption of
Section 30(3). I welcome comments and inputs from readers.

In a decision passed on June 1, 2012,
the IPAB has revoked the dual sim patent of S.Ramkumar numbered 214388. The
revocation of the patent was sought for by Spice Mobile and Samsung
Electronics, both of who had filed revocation petitions before the IPAB under
Section 64 of the Patents Act.

The patent was revoked on grounds of
anticipation (lack of novelty) and lack of inventive step. The other grounds
which were raised against the patent by Spice Mobile and Samsung were
insufficiency of disclosure, mere combination of known elements and violation
of Section 8 of the Patents Act.

Apart from substantive issues, the
IPAB had to deal with Ramkumar’s contention that a counter-claim for invalidity
of the patent was pending before the Madras High Court. On this issue, the IPAB
cited the decision
of the Delhi High Court in the Enercon matter i.e. a counter-claim under
Section 64 is a different remedy from a revocation petition and therefore both can simultaneously subsist. I am not in agreement with this view, the reasons for which I have set out in an earlier
post.

One of the primary contentions of
Spice and Samsung was that the amendment which was undertaken to the
specification was outside the scope of the original matter described, and hence impermissible.
Following are the IPAB’s observations on the issue:

“31.
If we see the purpose of amendments under section 57 (6) and the limitation
imposed on the amendments under section 59 we find that it is necessary, in our
view to take into consideration the following:

1.Does Section 57(6) permit an
applicant to file an application which is defective in its description of the
invention in order that he may subsequently make good that defect by providing
additional further descriptive material?

2. Are all the routes for amending
defects, subject to Section 59?

3. Does even refining of
description in the specification by way of explanation be held to be an
amendment to cure the deficiencies that are not permissible under section
59?

32.
In considering the whole question of discretion in respect of amendments under
section 57 (6) in the present case it is also necessary, in our view to take
into consideration the nature and extent of amendment, when they are primarily
for explanation and it is in public interest to allow them, in absence of very
compelling reasons to the contrary. However these amendments in any case cannot
be stretched beyond the limitations imposed by section 59. The purpose of
Section 57(6) is not to permit an applicant to file an application which is
defective in its description of the invention in order that he may subsequently
make good that defect by providing additional further descriptive
material.

33.
When we apply the above tests relating to the amendment to the present case we
find all the matter which was added during the prosecution of application was
not merely explanatory as additional elements such as plurality of
headphones/earphones jacks; a plurality of Bluetooth devices; concept of
simultaneous communication with respective SIM Cards and providing a
conference facility of voice signals to simultaneously enable more than one
person participate in a communication were added. These elements were not
disclosed in the specification even implicitly. Additional drawings relating to
additional matter were also filed to support the claims for these elements. We
find that effect of the added matter in the specification and claims is such
that it described the matter not in substance disclosed or shown in the
specification before the amendment. Further amended claims 1-20 do not fall
wholly within the scope of the claims 1-4 as originally filed. We are convinced
that amendments carried out during the prosecution of the application in the
specification, drawings and claims extend the scope of disclosed matter and
claims, which is particularly prohibited by Section 59. The applicants
therefore succeed in proving that new matter has been added by the Respondent 1
during the prosecution of the application which was allowed by Respondent 2. The
Respondent 2 ought to have sought for explanation from the Respondent 1.
Respondent 2 ought to have applied his discretion more cautiously and
judiciously under section 57(6), especially when there are large scale
amendments as in the present case. Therefore, we are constrained to set
aside the amendments allowed during prosecution of the application.”

I shall deal with this opinion of the
IPAB in detail in a later post. The troubling aspect of the IPAB’s decision is
the lack of rigorous analysis on the issue of novelty. From paragraphs 35 to
51, the IPAB goes on to list out the arguments of Spice, Samsung and Ramkumar.
It is from Paras 52-55 that the IPAB gives its own views on the issue of
novelty.

In my humble opinion, the analysis
lacks rigour and depth which is expected of a special Tribunal such as the
IPAB. Even if the conclusion is the right one, I have said this often, the
process of arriving at the conclusion must be of use in understanding certain
general principles or precepts which may be applied in future cases. I am not
sure if the IPAB’s decision in this case satisfies this requirement.

Again on the issue of lack of novelty,
I do not find adequate articulation of the logic applied by the IPAB to form
the opinion that the impugned patent lacks inventive step.

Since lack of novelty and inventive
step are the primary grounds on which the IPAB has based its decision, as a
student of the subject, I do not have much to glean from it. I am open to being
corrected on this point.

Sunday, June 3, 2012

The phraseology of Section 48(b),
on the face of it, varies from the wording of Section 48(a). A reading of the
sub-section tells us that the legislature has taken the view that a patented
process cannot be offered for sale or sold. This is because the provision uses
"offering for sale" and “selling” only with respect to a product
obtained directly by the patented process, but not with respect to the process
itself.

I'm not sure if it is correct to
assume that a patented process cannot be offered for sale or sold. The question
that comes to my mind is, considering the levels of awareness of Indian courts
on the law of patents and the framework of the Act, will an Indian court restrict
itself to strict interpretation of the provision?

The other question which I had
the opportunity to discuss with a very dear friend of mine is the reference to
"act of using" with respect to (i) the patented process and (ii) the “product
obtained directly BY the
patented process”.

The points of research here are:

(i)difference between “using the process” and using
the "product obtained directlyby
the patented process"; and

(ii)construction of the words “product obtained
directlyby the patented process”.

As regards the first point of
research, the reference is to the “patented process” itself. Since the
provision clearly refers to “using the process”, it means that use of the
process in any manner is an infringement of the patentee’s rights.

The second point of research relates
to products which are “obtained directly
by the patented process”.

When the Act uses the words “product
obtained directlyby the
patented process”, the question is, what products constitute an
infringement/infraction of the rights of the patentee under Section 48(b) of
the Act?

The operative portion of Section
48(b) helps us address the issue. The words on which one must focus are “directly"
and "by”.

The use of "directly"
in relation to a product obtained from the patented process could mean that
there can be no significant intermediary steps between the patented process and
the product. Only transient intermediaries may not affect the interpretation of
“direct”. However, what amounts to a “transient intermediary” requires a common
putative trait that applies uniformly.

The use of “by", although apparently
innocuous, must be paid close attention to. Why did the legislature choose to
use "by", instead of "from"? For most of us, “by” and “from”
are often interchangeable prepositions, at least in sentences such as
sub-section (b) (“directly by” and “directly from”). However, strictly
speaking, there is a difference between “by” and “from”.

“By” is used to indicate the
instrument which brings about a particular result. Therefore, the use of “by” in
sub-section(b) indicates that the patented process is instrumental in obtaining
the product. What this means is that not
only must the product be a direct product, the use of the process must also
be instrumental, and not merely significant or important.

In other words, the
process used must be invariably and inevitably associated with the creation of
the product. Simply put, the combined use of “directly” and “by” is that the
use of the process must be instrumental, and that only a direct product of the
process may be treated as a product for the purposes of Section 48(b).

Let’s assume:

1. There is a product A
which is being offered for sale in India.

2. Product A is not a direct
product of a patented process P.

3. However, “X” is THE direct product of P, and X has been used in the manufacture of A.

What is the status of the product A? Since X,
which is a direct product of P, has been used in the manufacture of A, the use
of X in the manufacture of A is an infringement of P.

Let’s complicate the hypothetical. It is possible for a patented process to have more than one direct
product. Would use of at least one of the direct products constitute
infringement of the patented process? I would say yes.

Does this also apply to direct “by-products”
of a patented process? I don’t see a preclusion in Section 48(b) which distinguishes between a product and a so-called by-product. Therefore, even use
of the direct by-product could amount to infringement of the patented process.

Saturday, June 2, 2012

By now, it is common knowledge
that appeals from the decisions of the Controller of patents which are covered
under Section 117A(2) lie before the IPAB. But the question that remains to be
answered on the basis of the current statutory framework is: “Where do appeals from the IPAB lie?”

I haven’t found a provision in the Patents Act which throws
light on the issue, but does it mean that we assume that appeals from IPAB
lie before the High Court? If so, wouldn’t we be rendering redundant the very
purpose of constituting the Board and Section 117F of the Patents Act (pursuant
to which matters were transferred from the High Courts to IPAB)?

Writ petitions from the decisions of the IPAB aren’t exactly
“appeals”, and the Writ Powers of a High Court, although plenary, original and
wide, have
a limited role to play in re-appreciating the facts of a case. Therefore,
writs cannot and ought not to be treated as “appeals”. They may be entertained
only in so far as they raise a pertinent question of law.

I was recently informed that the patentee in the Enercon
Matter has filed “appeals” before the Madras High Court against the
decision of the IPAB to revoke its patents. I am assuming that the reference was actually to "writs" because there is no provision for an "appeal". On the other hand, there are counter-claims
of invalidity against the very same patents which are pending before the Delhi
High Court. I am not sure how do the 2 High Courts intend to deal with the
issue without embarrassing each other.